In In Re: Smith Int'l, Inc., Case No. 2016-2303 (Fed. Cir., decided September 26, 2017), the Federal Circuit reversed a Patent Trial and Appeal Board’s (“The Board”) decision that found a Smith patent entitled “Expandable Underreamer/Stabilizer” invalid based on improper claim construction.

This case primarily concerns what the word “body” means in the context of US 6,732,817, owned by Smith.  The ‘817 patent is directed to a downhole drilling tool for oil and gas operations.

In 2012, Smith’s corporate parents sued Baker Hughes Inc. (“Baker Hughes”) in the District Court for the Southern District of Texas for infringement of the ‘817 patent.  Baker Hughes requested ex parte reexamination of the ‘817 patent, which the PTO granted.

The ‘817 patent describes an “expandable tool 500” having “a generally cylindrical tool body 510 with a flowbore 508 extending therethrough” and “one or more moveable, non-pivotable tool arms 520.”  The '817 patent also describes an "inner mandrel 560," which is "the innermost component within the tool 500."

Representative claim 28, as amended during the ex parte reexamination, reads as “An expandable downhole tool for use in a drill­ing assembly positioned within a wellbore …, comprising: a body; and at least one non-pivotable, moveable arm … having angled surfaces that engage said body to prevent said arm from vibrating in said second position; ….”

The Examiner rejected claim 28 as being anticipated by Eddison (WO 00/31371).  Eddison discloses a drilling tool having a "mandrel 16" that "extends through the body 18" and "provides mounting for a cam sleeve 28," which "cooperates with three extendable members in the form of cutters 30 mounted in respective body ports 32."

The Board affirmed the Examiner’s interpretation of the term “body” as a broad term that may encompass other components such as “mandrel” and “cam sleeve.”  The Board determined that the term “body” is a “generic term such as ‘member’ or ‘element’ that by itself provides no structural specificity.”  Also, the Board reasoned that only the term “body” is recited in the claims without further limiting features and that the specification neither defines the term “body” nor prohibits the examiner’s broad reading of it.

The Federal Circuit disagreed.  According to the Federal Circuit, the correct inquiry in giving a claim term its broadest reasonable interpretation in light of the specification is not whether the specification proscribes or precludes some broad reading of the claim term adopted by the examiner.  It should be an interpretation that corresponds with what and how the inventor describes his invention in the specification, i.e., an interpretation that is “consistent with the specification."

The Federal Circuit stated that even though some of the claims at issue recite a broad term “body” without further elaboration on what the term “body” encompasses; the remainder of the specification does not use the term as a generic body.  The specification consistently describes and refers to the body as a component distinct from others, such as the mandrel, piston, and drive ring.

The Federal Circuit concluded that the Board’s reasoning that because the specification does not “in and of itself proscribe the Examiner’s construction,” the Examiner’s interpretation was reasonable was erroneous.

Because the Board's findings regarding Eddison's teachings rest on its incorrect construction of "body," the Federal Circuit reversed the rejections of all of the appealed claims.